NanoString and Bird & Bird triumph against 10x Genomics at central division

The judges around presiding judge Ulrike Voß found EP 2 794 928 B1 to be invalid due to lack of novelty and lack of inventive step of one of the auxiliary requests (case ID: UPC 252/2023, ACT_551180/2023). The ruling is subject to appeal.

The patent is one of two that 10x Genomics and the Harvard College want to assert at the UPC. In addition to EP 928, the dispute also concerns EP 4 108 782 B1. Both patents protect a spatial profiling technology. US-based company 10x Genomics alleges that the use and distribution of NanoString’s CosMx products for RNA detection infringes the patents.

EP 2 794 928 B1 is a non-opted-out European patent. It is in effect in Germany, the Netherlands and France.

Competence in question

At the outset, 10x Genomics argued the UPC is not competent to decide on the validity of the German part of the patent, because there is already a revocation action against EP 928 involving the same parties pending in Germany. The patent owner lodged a preliminary objection relating to Article 29 of the Brussels I regulation.

According to this lis pendens, where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States any court other than the court first seised shall decline jurisdiction in favour of that court.

In 2022, the German NanoString subsidiary filed a nullity action against EP 928 at the German Federal Patent Court. In May this year, the Federal Patent Court revoked the German part of EP 928 (case ID: 3 Ni 20/22). 10x Genomics appealed this decision; the appeal is currently pending at the Federal Court of Justice.

NanoString claimants not the same

The patent holder argued that NanoString Technology Germany, acting as claimant in the German nullity suit belonged to the same group as NanoString Technology Europe, the claimant in the UPC revocation action. However, NanoString countered that these claimants should not be considered the “same parties” within the meaning of Article 29.

At the oral hearing, 10x Genomics withdrew the preliminary objection. In its decision however, the central division Munich addressed this point. Taking into account a recent ruling of the UPC Court of Appeal in Mala vs Nokia, the judges concluded that in the current case NanoString Germany and NanoString Europe are not the same legal entities and thus Article 29 does not apply. The judges bench comprised presiding judge Ulrike Voß, judge rapporteur András Kupecz and technically qualified judge Eric Enderlin.

As a result of the judgment, the patent is now also invalid in France and the Netherlands. It is not known whether 10x Genomics will appeal.

The parties are relying on the same advisors for all proceedings at the UPC. A team from Bird & Bird is acting for NanoString, which was acquired by Bruker in May. While Munich-based partner and patent attorney Daniela Kinkeldey argued the revocation, Düsseldorf-based partner Oliver Jüngst argued the lis pendens. In addition, Anne Halbach, Jan van Dieck, Moritz Schröder, and Anna Schadel are playing a role in the proceedings for NanoString.

A mixed team from Bardehle Pagenberg is representing 10x Genomics. The team led by lawyer Tilman Müller-Stoy and patent attorney Axel Berger also represent 10x Genomics in the case against Curio Bioscience.